Massachusetts Legal Blog

Best Practices After the America Invents Act – Massachusetts Patent Law

Back in 2011, the America Invents act was brought into play. It was the most comprehensive and significant of all patent law reforms in decades. Some of those changes of the act went into effect right away, while others didn’t take place until September 2012. The most significant of all changes took place in March 2013. If you aren’t sure how your company can best address all of these changes, a few considerations are outlined below.
Implementing a Systematic Patent Program

One of the biggest aspects in the act is the shift from the first-to-invent to the first-to-file system. This transition is in alignment with all of the other industrialized countries. Under the current US patent laws, the first one to invent the product and file for the patent is the one who is entitled to receive the patent, even if someone who comes up with the same technology files for their patent first. Thanks to the March 16, 2013 changes, the one filing for the patent first is the one who is entitled to the patent.

Enhancing the Objectives of Business with Quick Prosecution

One of the biggest complaints about the patent system is that it can take three years or longer before the patent is even going to be issued. To handle this issue, the act has a new program where final disposition of the app is going to occur within a year of priority status being attained. Surcharges of $4,800 are due for larger businesses and $2,400 for smaller entities.

Correcting Errors and Strengthening Patents

Beginning on September 16, 2012, a new procedure allows patent owners to ask for a supplemental exam to correct any info that they believed was relevant to their patent. Companies that already have patents might want to consider a supplemental exam to help strengthen their patent, especially when it comes to asserting their patent against another company.

Consider Implementing Virtual Marking

The act brought patent law into the current century by allowing companies to use virtual marking of their products. Under the new patent law, companies who are selling products that are patented are required to mark that product with the patent number in order to be able to recover any damages before a lawsuit occurs. Before the act came into play, patent owners were required to place the mark right on the product, or on the product’s packaging when it couldn’t be marked.

Pre-Issuing of Submissions and Review After the Grant

New defensive measures come into play with the new act to help challenge any patents and potential applications. Pre-issuance submission of prior art can be made to the patent office by an outside party during the time the patent application is still being reviewed. This allows that outside party to provide their input to the patent office when dealing with prosecution. Seeking the counsel of a qualified patent law attorney is advised when dealing with a patent law dispute.

Documenting Development of Commercial Technology

The act provides companies with new mechanisms to take control of any patent infringement claims, such as a prior use defense. Successful prior use defenses won’t have to worry about any infringement of the specific subject matter regarding commercial use.

By Shapiro Law Group